Friday, 25 December 2009

One way of “raising the bar” with regard to inventive step is to make the skilled person competent in more than one field of the prior art. There have been several decisions, especially in the biotech sector, where the skilled person was considered to be a skilled team. A similar way of achieving the same effect is to have the skilled person consult one or more experts.

The present decision is an example of the latter approach. The Board provides a rather confused (and confusing) discussion of who the skilled person is, taking into account different stages of a manufacturing process.

[…] It has been disputed who in the present case is to be considered the person skilled in the art. [7.1]

It is common ground that in the development or design of plastic parts such as shaving razor handles according to the patent in suit or chisel handles according to D10, the product design aspect is important, determining the shape and the structure of the specific part.

In this respect the Board endorses the opinion of the [patent proprietor] insofar as that the product design is primarily the task of product designers, which are familiar with the characteristics of the specific part to be designed and that due to differences in these specific characteristics, e.g. based on the intended use of such a product, the product designer designing shaving razor handles and the product designer designing chisel handles need not necessarily be one and the same person.

It is further undisputed that considering the development of parts of the kind concerned on a time scale, the product designer is active from the very beginning of the development or design of such a product. In this respect the Board further considers the opinion of the [patent proprietor] to be correct that already during the design phase of a specific part attention will be paid to the method, at present the molding method, by which this product will eventually be manufactured.

However, the Board finds that towards the end of the product design phase the manufacturing of such a part, although a matter of concern already earlier on, comes more and more into focus and then remains the predominant issue. [7.2]

Claim 1 concerns solely the manufacture of shaving razor handles as the specific part concerned. This applies correspondingly with respect to D10 which discloses a method for manufacturing chisel handles.

Concerning the knowledge required with respect to the manufacturing aspect it can be left open to what extent the product designer is aware of the possibilities, advantages and constraints underlying the molding methods concerned, since in view of the Board, irrespective of his/her own knowledge, the product designer in the end will consult an expert in the technology of molding small plastic parts, a field of technology encompassing not only shaving razor handles according to claim 1, but also chisel handles according to D10 or, as discussed during the oral proceedings, toothbrushes according to D2/D6. [7.3]

The person skilled in the art for assessing inventive step of the presently claimed method thus can be considered as being a product designer specialized in the specific part to be manufactured who, if not forming a team with an expert in the technology of molding of small plastic parts, will at least consult such an expert.

In either case it is the knowledge of the expert in the technology of molding small parts which is determinative for the choice of the appropriate manufacturing method. [7.4]

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